Publishers Allege Use of Articles In Patent Filings Is Copyright Infringement

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By Anandashankar Mazumdar  

The unauthorized copying and distribution of scientific articles in support of patent applications constitutes infringement of the copyright interests in those articles, according to two complaints filed Feb. 29 in the U.S. District Court for the Northern District of Illinois (John Wiley & Sons Ltd. v. McDonnell Boehnen Hulbert & Berghoff LLP, N.D. Ill., No. 1:12-cv-01446, complaint filed 2/29/12) and the U.S. District Court for the District of Minnesota (American Institute of Physics v. Schwegman, Lundberg & Woessner P.A., D. Minn., No. 0:12-cv-00528-RHK-JJK, complaint filed 2/29/12).

These complaints come on the heels of a controversy regarding a bill that would bar the government from requiring public access to articles flowing from government-funded research as well as a putative class action against Westlaw and Lexis-Nexis for making the test of court filings available online.

Late in 2011, Rep. Darrell E. Issa (R-Calif.) introduced the Research Works Act (H.R. 3699), which would bar federal government agencies from requiring that peer-reviewed articles resulting from government-funded research be made available online at no cost.

In early February, Rep. Michael F. Doyle (R-Pa.) and Sen. John Cornyn III (R-Texas) introduced the Federal Research Public Access Act of 2012 (H.R. 4004, S. 2096), which would do just the opposite, requiring free access to copyrighted articles that were based on government-funded research.

An on Feb. 22, two lawyers filed a putative class action claim against the owners of the Westlaw and Lexis-Nexis online databases, arguing that making lawyer-authored pleadings available online infringed the lawyers' copyright interests.

Complaints: Patent Filings Infringe Rights

In the latest actions, John Wiley & Sons Ltd., based in Hoboken, N.J., and the American Institute of Physics, based in College Park, Md., are publishers of what they term “many of the world's leading scientific, technology and medical journals.”

The publishers initiated claims against Schwegman, Lundberg & Woessner, Minneapolis, and McDonnell Boehnen Hulbert & Berghoff, Chicago, both law firms with patent practices.

According to the complaints, the law firms infringed the copyrights in the plaintiffs' works by “ma[king] and/or distribut[ing] to the United States Patent and Trademark Office …, and perhaps others, unauthorized copies of copyrighted articles from plaintiffs' journals.”

“This mere multiplication of copies for the for-profit business purposes of defendants is not privileged under the law,” according to the plaintiffs' claims of copyright infringement.

In January, the PTO's Office of the General Counsel issued a memorandum on the question of the use of “non-patent literature” in the patent examination process.

According to the memorandum, it is the PTO's position that:

(1) A significant portion of the PTO's own use of such articles is governed by the licenses it purchases from publishers of such material,

(2) To the extent that the PTO's use is not governed by such licenses, the use being made is protected as fair use under the Copyright Act of 1976, 17 U.S.C. §107, and

(3) The use of such articles by patent applicants and their counsel also constitutes fair use to the extent that such copies are being submitted to the PTO in compliance with the PTO's disclosure requirements.

However, the PTO memorandum did not take a position on the question of whether the fair use doctrine applied to other copying and distribution, such as copies for clients, for other attorneys, or for a law firm's files.

The plaintiffs seek permanent injunctions and damages for the unauthorized and uncompensated duplication and distribution of complete articles from their works.

Also designated in each action are 10 unnamed “Doe” defendants, representing other patent law firms.

Wiley and the American Institute of Physics were represented by Marianne C. Holzhall of McGarry & McGarry, Chicago, for the Illinois action and Michelle Kreidler Dove of Many & Associates, Minneapolis, for the Minnesota action.

For More Information

Illinois complaint at

Minnesota complaint at

PTO memorandum at